Wednesday, April 27, 2016

Significance of Framing an Issue of Trademark Invalidity under Section 124 of the Trademarks Act, 1999

In the last post, I discussed the purpose and import of framing of issues in a civil suit under Order 14 of the Code of Civil procedure. I took the view that the framing of an issue under Order 14 does not tantamount to the Court taking a position with respect to the contentions of parties on a material question of fact or law. It is a mere act of charting the trajectory and contours of the trial so that the progress of the trial is not waylaid by irrelevant or immaterial issues which have no bearing on the adjudication of the rights and liabilities of the parties. 

The question that I shall address as part of this post is whether there is a difference between the framing of an issue under Order 14 of the CPC and framing of an issue with respect to the invalidity of a trademark registration under Section 124(1)(a or b)(ii) of the Trademarks Act, 1999. Under the said provision of the Trademarks Act, one of the condition precedents for the grant of a stay on a suit for trademark infringement is that a Court must form a prima facie opinion that a party’s contention regarding the invalidity of the other party’s trademark registration is tenable. Should such an opinion be formed, the Court shall raise an issue regarding the same and adjourn the case for a period of three months from the date of the framing of the issue in order to enable the challenging party to apply to the IPAB for rectification/removal of the registered trademark.

This brings out the first distinction between an issue framed under Order 14 of the CPC and an issue framed under Section 124 of the Trademarks Act. While an issue under Order 14 is framed to merely identify material propositions of law or fact on which the parties differ so that the suit may be determined, an issue framed under Section 124 goes a step further because it requires the Court to form a prima facie opinion of the tenability of the contention of trademark invalidity. In other words, while under Order 14 a Court need not and cannot express its prima facie opinion on the strength of the parties’ contentions, it must necessarily do so under Section 124 on the question of trademark invalidity.

Secondly, it follows that in forming such a prima facie opinion under Section 124, the Court has to give reasons for holding in favour of either party, which is the settled law with respect to the standard of reasoning expected from prima facie findings. Although the Delhi High Court in its Full Bench decision in Data Infosys v. Infosys Technologies does not expressly endorse this view, a reading of Paragraphs 31 and 32 of the judgement reflects the Court’s implicit endorsement of the need for reasoning in assessing tenability.

Thirdly, while under Order 14 issues are framed when the stage arrives, an issue under Section 124 may be framed even before the stage of framing of issues for trial. This has been clarified by the Delhi High Court in Data Infosys. Extracted below is the relevant excerpt from Paragraph 31 of the judgement:

"31......The court is of the opinion that Parliamentary intendment is clear that if at the stage of filing of the suit, a rectification application is "pending" before IPAB, there is no choice for the court, but to adjourn the infringement suit. However, if no such application is pending, the court which is later approached with an infringement suit (which "tries" it) has to appraise prima facie tenability of the invalidity plea, whenever taken. It could be urged even by way of amendment. Nevertheless, there cannot be an automatic stay, in view of the express phraseology of Section 124 (1) (ii) which mandates exercise of discretion. To postpone the consideration at the stage of framing issues would be a narrow interpretation, undermining the broad basic distinction between the two contingencies envisioned by Section 124 (1) (b).

Finally, the consequence of an issue framed under Order 14 is vastly different from that of an issue framed under Section 124. While an issue under the former merely captures an aspect of the dispute on which evidence must be led by the parties in trial and judgement must be pronounced by the Court ultimately, an issue under Section 124 decides the very progress of the suit since if the Court does frame an issue of invalidity post a prima facie analysis, the inevitable consequence is a stay on the suit for infringement (unless the party challenging the trademark registration fails to approach the IPAB for rectification within three months from the framing of the issue).

Therefore, it is evident that not only is the object of Order 14 different from that of Section 124, the standard and rigour of analysis called for under the latter is significantly higher than the former.

In the next post, I will discuss a few more aspects of Section 124. 

Tuesday, April 26, 2016

What is the Purpose and Significance of framing of issues in Civil Suits?

Framing of issues in a civil suit seems like a routine thing and perhaps this is why its actual purpose and significance is sometimes lost or misunderstood in the “routine” of practice. Once in a while it helps to take a step back and ask oneself the true meaning of a certain procedure which is taken for granted. Setting aside preconceived notions as to the object of and procedure for framing of issues, let’s try to cull it out from Order 14 of the CPC.

The title of the Order reads “Settlement of Issues and Determination of Suit on Issues of Law or on Issues Agreed Upon”. Therefore, a suit is determined based on issues of law or other issues agreed upon by parties in a suit. But what is an “issue”? Although the CPC does not define the term, sub-rule 1 of Rule 1 of Order 14 says that issues arise when a material proposition of fact or law is affirmed by one party and denied by the other. In other words, both parties must disagree on a material proposition of fact or law.

Additionally, the Evidence Act also defines “Facts in issue” to mean and include any fact which, either by itself or in connection with other facts, has a bearing on a right or liability asserted or denied in a suit. The Explanation to the definition further says that when a Court records an issue of fact under the CPC, the fact to be asserted or denied in response to such as issue, too would be treated as a fact in issue.

As to what constitutes a material proposition giving rise to an issue, Sub-rule 2 of Rule 1 states that material propositions are those propositions of law or facts which a plaintiff must allege in order to show a right to sue or a defendant must allege in order to constitute his defence. Simply put, a material proposition is one which advances a party’s case factually or legally. Sub-rule 3 mandates that each material proposition on which the parties disagree shall be framed as a distinct issue. Therefore, it could be said that propositions of fact or law which do not further a party’s case are not material and therefore ought not to be framed as issues. However, what is the consequence when a proposition of fact or law, although material, is not framed as an issue despite the parties being at variance with each other?

On this, the Supreme Court has held that non-framing of an issue does not vitiate the proceedings as long as the pleadings of parties bear out that the issue exists and both parties have led evidence at trial to prove their respective contentions on the issue. In other words, a Court can rule on an issue even if it has not been specifically framed, so long as it is material to the determination of the suit.

How does a Court go about framing an issue? Sub-rule 5 of Rule 1 lays down the procedure for this. It says that at the first hearing of a suit, the Court shall, after reading the plaint and the written statement, and after examination under Order 10 Rule 2 and after hearing the parties or their counsels, ascertain upon what material propositions of fact or law the parties are at variance, and shall thereupon proceed to frame and record the issues on which the right decision of the case appears to depend. What does this mean? It simply means that a Court shall understand the respective contentions of parties based on their written pleadings and oral submissions (both being pleonasms) and distil only those propositions of fact and law on which the parties differ and which are “material” for the adjudication of the suit. It is to be understood that the materiality being referred to in sub-rule 5 does not mean evaluation of the tenability of the contentions of parties on factual or legal propositions. It simply refers to testing an issue for its relevance to the determination of the case.

For instance, in a suit for patent infringement, if there is no dispute between the parties as to the ownership of the patent by the plaintiff, there is no point in framing an issue on it since the parties are not at issue on the question of ownership. Therefore, the question of ownership is not a material proposition on which the parties disagree. If, however, in a given case the plaintiff claims to be an exclusive licensee of the patentee and the defendant disputes the assertion on factual and legal grounds, the maintainability of the plaintiff’s action against the defendant has to be framed as an issue (under the Patents Act only a patentee or the exclusive licensee may institute a suit for infringement). Clearly, the issue is material to the enforcement of the patent and hence the adjudication of the suit.

The procedure of framing of an issue needs to be understood with clarity since sometimes there is a tendency to read more into the mere framing of an issue under Order 14 than is warranted. Framing of an issue under Order 14 does not tantamount to the Court taking a position with respect to the contentions of parties on a material question of fact or law. It is a mere act of charting the trajectory and contours of the trial so that the progress of the trial is not waylaid by a slugfest on irrelevant or immaterial issues which have no bearing on the adjudication of the rights and liabilities of the parties. A good decision to read on framing of issues is Makhanlal Bangal v. Manas Bhunia which although delivered by the Supreme Court in the context of the Representation of the People Act, 1951, is relevant since the procedure under the CPC applies to the statute.

Having discussed the procedure and significance of framing of issues under Order 14 of the CPC, in the next post I will compare and contrast it with the framing of an issue under Section 124 of the Trademarks Act in relation to the invalidity of a trademark registration.

Friday, April 22, 2016

Evolving a Culture of Damages

On the first of this month, I had the opportunity to address IP academics and researchers as part of NLU Delhi’s Fifth Annual IP Teaching Workshop on criminal law and intellectual property. During the course of my talk, I happened to touch upon certain aspects of civil IP litigation, in particular the issue of damages in suits for IP infringement. In this post, I shall share the gist of my talk on the topic.

In suits for IP infringement, while parties routinely duke it out on interim injunctions and other interlocutory reliefs, the enthusiasm and appetite for earnest and expeditious prosecution of trial is largely found wanting. But then I guess this could be said of civil litigation in India in general, with contractual litigation being a possible exception to this norm. Perhaps an attitudinal change to civil litigation may be brought about if Indian Courts evolved a rigorous culture of damages. After all, if parties know that they are bound to recover their legal costs and more should they succeed, there is no reason to assume that their vision and legal strategy will not go beyond the T20 round of interim reliefs. So how does one bring about a culture of damages?

I believe that the best of judicial outcomes are the product of sound assistance from the Bar. Therefore, if parties, through counsels, lead cogent evidence on damages by practically applying the various theories of damages, instead of merely parroting a handful of oft-quoted principles or blindly reproducing their pleadings, Courts might find it easier to award damages on a rational basis. In the absence of hard evidence or a reasoned basis, a Court has no other option but to award an arbitrary and nominal figure or nothing. More often than not, evidence affidavits of parties contain very little by way of explanation and evidence for the damages sought. It is erroneously assumed that the evidentiary burden on parties is limited to proving their respective substantive contentions on validity and infringement of a right, even when damages have been prominently sought as one of the reliefs in the suit.

It is almost as though Section 12 of the Evidence Act, 1872 does not exist. According to the provision, in suits in which damages are claimed, any fact which enables the Court to determine the amount of damages which ought to be awarded, is relevant. And relevant facts on the relief of damages have to be proved by the party claiming it. One decision which discusses damages in some detail in the context of copyright infringement is IPRS v. Debashis Patnaik by the Delhi High Court. This judgement is a must-read since it contains a fair degree of discussion on nominal, compensatory and exemplary/punitive damages based on a host of decisions from the UK, US and a few Indian decisions. That said, the reality is that such judgements aren’t the norm and this needs to change. One possible reason as to why our damages jurisprudence hasn’t matured much is because our law schools do not equip students with the empirical tools they need to apply theories of damages to the factual matrix of a case. It would help if IP practitioners, academics and researchers could come together to find workable solutions for such practical challenges.

Comments and suggestions are welcome.

Thursday, March 31, 2016

Delhi High Court Rules on the CCI’s Jurisdiction over Patent-related Market Abuse

This is my first post of the year and I am happy that I get to start on a positive note. Yesterday i.e. March 30, 2016, Justice Vibhu Bakhru of the Delhi High Court delivered a 161-page decision in a batch of Writ Petitions wherein the central issue before the Court was the jurisdiction of the Competition Commission of India (CCI) on abuse of dominant position flowing from ownership and exercise of patent rights. Since I was part of the team which worked on the matter, I will not comment on the facts of the case. That said, one wouldn’t be wrong in saying that the Court’s findings on certain questions of law are significant milestones in the evolution of Indian Intellectual Property and anti-trust jurisprudence.

On a personal note, I can safely say that the Court’s findings on the interplay between (a) the jurisdictions of a civil court seized of a suit for patent infringement, (b) the Controller of Patents under the compulsory licensing mechanism (Section 84 of the Patents Act) and (c) the Competition Commission of India, resonate with my analysis in several posts in this blog, which were subsequently discussed by the Centre for Internet and Society. In fact, I had undertaken a comprehensive analysis of the statutory allocation of responsibilities between civil courts, Controller of patents and Competition Commission in my paper “Patents and Competition Law: Identifying Jurisdictional Metes and Bounds in the Indian Context” which was submitted last year for publication in the National Law School of India Review (NLSIR) and will hopefully be published in the next few days. This paper is based on my talk delivered last May in the 8th National Symposium on Competition Law at the National Law School, Bangalore.

Extracted below are a few excerpts from the paper:

The primary object of this article is to understand the relationship between patent rights and competition law under the existing Indian legal framework. It has become imperative to elucidate the legal position on the interplay between the two, in light of growing antitrust concerns arising out of the exercise of patent rights. The Author has employed conventional principles of statutory interpretation to the relevant provisions of the Patents Act, 1970 and the Competition Act, 2002 to arrive at his conclusions, with Expert Committee Reports playing a corroborative role, primarily because the nature of enquiry undertaken in this article is predominantly legal and not policy-related. Additionally, this is due to the fact that there is a lack of guidance on the issue from Indian Courts.

Intellectual Property Rights (IPRs) and Competition law are usually perceived as sharing an uneasy relationship given their seemingly contrasting goals. However, to pit one against the other without qualifications and riders may not do justice to the nuances of their respective natures, roles and goals. The system of IPRs is premised on the assumption that grant of exclusive rights for a limited term is desirable to promote dynamic competition, which pushes the envelope of innovation and thereby contributes to enlarging the basket of choices available to consumers. In other words, in theory, incentivising innovation through IPRs elevates the level of competition from static to dynamic, which is in contrast to the adversarial perception of IPRs and competition law. That being said, in practice, even the most stringently regulated right is susceptible to abuse at the hands of a determined and motivated right owner to the detriment of healthy competition. This necessitates the existence of a safety valve in the form of competition law.

Simply put, the goal of competition law with respect to IPRs is to ensure that the said species of rights are exercised within the limits prescribed by law and in a manner which is beneficial to consumers and which promotes competition. Therefore, an IP owner runs into conflict with competition law only in the event of a transgression in his capacity as an IP owner if such transgression distorts competition. The validity of this general proposition in the Indian context will be examined and tested in specific relation to patent rights in the ensuing portions of this article. The aim is to ascertain if the Competition Act, 2002 (hereinafter referred to as “the Competition Act”) has indeed been vested with the power to check restrictive and abusive trade practices resorted to by a patentee, and if so, to what extent.


IP statutes, without a doubt, provide for internal corrective mechanisms to address inequities arising out of non-use or abuse of IP rights. However, the scope of analysis undertaken under these mechanisms is limited to verification/examination of achievement of the specific objectives of IP statutes. In other words, these mechanisms lack the sweep and depth of a market-based assessment of the actions of an IP owner under the Competition Act. No single IP regulator, be it the Controller of Patents or the Copyright Board, is charged with the duties of the Commission as reflected in Section 18 of the Competition Act, or is vested with the vast powers of the Commission to deal with market mischief. Therefore, given that the specific object of the Competition Act is to foster sustainable competition in the market, protect the interest of consumers and to ensure freedom of trade, the Competition Commission must be allowed to fulfil its mandate unhindered.”